Warner Bros. Pictures, a division of WB Studio Enterprises Inc. v. John Sellars
Claim Number: FA1112001421434
Complainant is Warner Bros. Pictures, a division of WB Studio Enterprises Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is John Sellars (“Respondent”), represented by Ben T. Lila of Mandour & Associates, APC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegangstersquad.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2011; the National Arbitration Forum received payment on December 23, 2011.
On December 27, 2011, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <thegangstersquad.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thegangstersquad.com. Also on January 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A late Response was received and determined to be deficient on March 12, 2012.
On March 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that by virtue of an exclusive license agreement, it owns copyright, trademark and related intellectual property rights to the marks TALES FROM THE GANSTER SQUAD and THE GANGSTER SQUAD (the “THE GANGSTER SQUAD Marks.”)
By way of background, “Tales From The Gangster Squad” is a series of articles in the Los Angeles Times written by Paul Lieberman about the division of the Los Angeles Police Department called “The Gangster Squad”. These articles were published in the Los Angeles Times between October 26, 2008 and November 1, 2008. On November 26, 2008 Complainant purchased the rights to the series and intended to develop a motion picture based on the series.
Since acquiring its license, Complainant has been in development of its film and promoted the film under THE GANGSTER SQUAD Marks. Complainant alleges that as a result of this use, THE GANGSTER SQUAD Marks have acquired secondary meaning.
Respondent registered the domain name <thegangstersquad.com> on October 31, 2008 (the “Disputed Domain Name”). Complainant alleges that the disputed domain name is identical to its THE GANGSTER SQUAD mark and is confusingly similar to its TALES FROM THE GANGSTER SQUAD mark. Complainant contends that Respondent is not authorized by Complainant to use Complainant’s marks in the Disputed Domain Name. Further, Complainant alleges that Respondent is not commonly known by the Disputed Domain Name.
As evidence that Respondent has no legitimate interest in the Disputed Domain Name, Complainant submits that the Disputed Domain Name resolves to a generic landing page that contains hyperlinks to websites not sponsored by Complainant for which Respondent receives click-through fees. Further, Respondent passively held the Disputed Domain Name, which he registered only five days after the articles ran in the Los Angeles Times, for three years.
Finally, Complainant contends that Respondent registered the Disputed Domain Name in bad faith. As evidence, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the marks prior to registering the Disputed Domain Name. Moreover, Complainant submits that the fact that Respondent registered the Disputed Domain Name five days after the series of articles appeared in the Los Angeles Times is evidence of bad faith. As further evidence of bad faith, Complainant submits that Respondent offered to sell the Disputed Domain Name for $250,000.
B. Respondent
Respondent claims that he is an author in the process of writing a book entitled “The Gangster Squad,” which will be about the division of the Los Angeles Police Department. Respondent contends that he registered the Disputed Domain Name for the purpose of marketing the future book.
Respondent alleges that Complainant fails to provide evidence of trademark rights to THE GANGSTER SQUAD Marks. Further, Respondent alleges that Complainant cannot establish common law rights in the marks because Paul Lieberman’s use of The GANGSTER SQUAD Marks did not constitute use in commerce.
Further, Respondent alleges that the marks at issue are inherently descriptive and could relate to many stories about the “Gangster Squad” division and that its use is a fair use. Finally, Respondent alleges he has a legitimate interest in the Disputed Domain Name and that he did not register the Disputed Domain Name in bad faith. He contends that he had no knowledge of Complainant’s alleged rights in THE GANGSTER SQUAD Marks and that he did not attempt to divert traffic from Complainant’s website. Rather, Respondent submits that he is an author and that he purchased the Disputed Domain Name to market the book that he is working on. He claims that at the time he purchased the Disputed Domain Name he had no knowledge of Complainant’s alleged trademark rights.
As to the $250,000 offer, Respondent submits that his offer to sell the Disputed Domain Name was not a serious offer and was meant to be facetious and that it is not evidence of his bad faith. He submits that he did not know the identity of the prospective purchaser, and that if he had, he would have offered the Disputed Domain Name for free.
Respondent contends that Complainant’s filing of this dispute is evidence of reverse domain-name hijacking.
Preliminary Issue: Deficient Response
The Response was received after the deadline to file a Response. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. However, the Panel, in its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider a response that was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Here, on March 7, 2012, Respondent submitted a Request for Extension of Time to Respond to the Complaint with Complainant’s Consent. Therefore, despite the untimeliness of the answer, the Panel elects to consider Respondent’s response.
The Panel finds that:
- Complainant has failed to establish rights in THE GANGSTER SQUAD Marks under Policy ¶4(a)(i).
- Because Complainant fails to establish rights in THE GANGSTER SQUAD Marks, the Panel need not determine whether the <thegangstersquad.com> domain name is identical or confusingly similar to that mark, whether Respondent has rights or legitimate interests in <thegangstersquad.com> domain name, and/or whether Respondent registered or uses <thegangstersquad.com> domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
THE GANGSTER SQUAD Marks are not registered trademarks, and Complainant’s only submissions allegedly demonstrating rights in THE GANGSTER SQUAD Marks are (1) the Option Purchase Agreement by and between Warner Bros. Pictures, a division of WB Studio Enterprises, Inc. and Paul Liberman, author of the series of articles published in the Los Angeles Times entitled “Tales from the Gangster Squad”, dated November 3, 2008; (2) the contention that from October 2008 through present, Complainant, or its predecessors in interest, have continuously used THE GANGSTER SQUAD Marks; (3) the contention that since November 3, 2008, Complainant has been in development of a motion picture entitled The Gangster Squad; and, (4) the contention that that Complainant has maintained a presence in the press and media promoting the same. As a result, Complainant contends that it has acquired common law trademark rights in THE GANGSTER SQUAD Marks due to the distinctiveness and secondary meaning that the public has come to associate these marks with.
The Panel finds that this evidence fails to demonstrate that THE GANGSTER SQUAD Marks have acquired secondary meaning through continuous and ongoing public use. Accordingly, Complainant has not sustained its burden to prove that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Compare Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (finding that the Complainant failed to carry its burden of proof under Policy ¶ 4(a)(i), noting that a “‘complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services,’” and “‘Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.’”) (quoting the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?), with Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership), and Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Here, Complainant has not provided sufficient evidence of rights in THE GANGSTER SQUAD Marks. Complainant’s allegations rely solely on the Option Purchase Agreement, which does not expressly contain any reference to THE GANGSTER SQUAD Marks. Complainant, therefore, failed to provide any evidence that Paul Lieberman held rights in either THE GANGSTER SQUAD or TALES FROM THE GANGSTER SQUAD mark. Moreover, the article titles that appeared in the Los Angeles Times do not constitute trademark use.
Thus, the Panel finds that Complainant failed to establish rights in THE GANGSTER SQUAD Marks under Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).
Having found that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel need not continue its analysis. See Hugo Daniel Barbaca Bejinha, FA 836538 (“[I]n view of the fact that the Complainant has failed to satisfy the requirements of the Policy with respect to Subparagraph 4(a)(i), this Panel need not opine on whether the Respondent has rights or legitimate interests in the disputed domain name, or whether that name was registered and is being used in bad faith.”).
Complainant has not established all three elements required under the ICANN Policy. The Panel therefore concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thegangstersquad.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: April 2, 2012
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